87 F. 920 -

87 F1d 920

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Case Text

920.

87

REPORTER.

Q, by means of a spring pIng, X. This plug Is tapered, and has a hole In the center just the size of wire U. The end of, the plug is slit like the plugs used for making connections on switch boards,so that, when it is driven

"The other end of the collslo! .electro-magnet, K, Is connected to the rall,

forcibly .into a hole drilled in the rail, it clamps the wire, making a reliable electric connection."

are here set up,but none of them sa-ve that of JJ.oninfringement need be considered., Mqstclearly, the defendants do not infringe this patent. Their plug has no hole in the center; it is not split; it is not a spring plug; and has no spring action. let a. decree be drawn dismissing the bill of complaint, with costs.

Where executeq a Ucenl\e, .to, (j.efendant, but, after defendant began to manufacture thereunder, canceled the license, and defendant continued to manufacture and sell the goods, the measure of damages Is not to ,be,:!letermlned by tM J,i<len$lt fee, .but by the actual profits of de.
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This was 'a,suitin equity by H. Wale!:> against the Water· bUry Manufacturing Oompany forillleged infringement of a patent. The cause ""as heard on exceptions'totbe master's report. Henry Stoddard and Roger'S. -;J3aldwin, for complainant. , Oharles ';Lt InJ;tersoll, Geo. E,'Terry,and John K. Beach, for defendant. TOWNSEND, District, Judge. In this cause, upon final hearing, the court held thllt certain claims of the patent in suit were infringed, ,an accounting. 59 Fed. 285. and referred the matter to a master The questions llerf;lin arise upOn .exceptions to the master's report. Thepateqt waljl for an improved buckle.' Complainant gave defendant a Ucense to manufacture said upon paymentpf a royalty of 15 cents a gross. The pucklewaaalso used in connection with a clotbing, and, fOf each gross of pencil holder to be .attached to buckles and: holders combined, defendant agreed to pay a fee, 'graped according to theseUing price, and amounting to $2.03l where the selling price ""'AS $5.08 per gross. After defendant had commencedto,manufactllre! complainant canceled the: lieense. Defendant continued to manufacture, and complainant brought suit. The lice;nse w"scanceled in June, 1881. The bill was pled in November, 1881, apdtbe.answer was May, 1882. Complainant first tO'take evidence se,veq years later, and brought the case to the court for a final hearing in 1893, after the patent bad expired. Oomplainant in the meantime made no attempt to manufacture. Defendant manufactured 15', 1881, and January 18, 1893, 11,609 6 / 12 gross of buckles, of eight different sizes and prices, 9,561 of whicll,were made in pencil: holder. Large profits were made on No. 1,403, which was used in the pencil holder.

WALES V. WATERBURY MFG. CO.

921

The principal contention herein i$ as to what share of their profita should be assigned to the buckle. The master suggests several different methods of estimating the amount to be allowed the complain· ant: First, the license fee agreed upon for buckles and for buckles attached to pencil holders, which would amount to $19,010.61; second, a deduction of 15 cents from the profit on the pencil holder, leaving all the other profits to the complainant, which would amount to $32,431.18; third, a division of the profits of the pencil holder according to the respective cost of the holder and buckle, which would give the complainant $21,454; fourth, a division of the profits of the pencil holder equally"Oll four elements named by the master, which would give the complainant $25,383.49. Defelldant insists that the claims allowed do not CQver the entire buckle; that the buckle used in the pencil holders was d,Uierent froqJ. the others, and was improved by defendant; that there is no definite proof as to the amount of profits accruing to the complainant from the patented part of the buckle; that, as complainant has never attempted to manufacture, she has suffered no damage$; that complainant cannot recover an amount based on her license contract; that, having canceled her license, she can now recover only legal damages for infringement; and that, if the license fee i$ to goven, it should be the license fee on the buckle only, or 15 cents for each gross of buckles sold, which would make about $1,740. Defendant submits a statement of reo ceipts and costs, in which it estimates the amount received for the buckles used with the holder at the same price as that for which it sold the same buckles without the holders, and makes the amount of its profits $2,690.04, which it claims to be the whole profits for which it can be liable in any event. I think defendant is right in its contention. Complainant appears to have preferred an acconnting for defendant's profits after the expiration of the patent to an adjudication upon the patent during its life. Complainant is only entitled to the profits made upon the buckle. The 15 cents license fee on the buckle might be adopted as the measure of profits except that, taking the selling price and cost of the buckles at defendant's own estimate, its profits were mani· festly greater than this license fee. The seven numbers or sizes of buckles sold,·other than those combined with the pencil holders, make about 2,130 gross of buckles, for which defendant admits that it received $2,408,63. .Defendant's estimate of the cost in making these buckles is $1,975.33, which would leave a profit of $433.30. The master's estimate of the costs, correcting a manifest clerical error, and supplying a manifest omission, is $1,973.50, or $1.85 less than that of complainant. Complainant admits, however, certain omissions on the part of the master, and that the actual cost, based on the Plaster's estimates and supplying his omissions of the No. 1,403 buckles, was $2,085.50. This reduces the profits on the buckles other than No. 1,403 to $323.13, instead of $433.30, which defendant admit· ted in its account. Of No. 1,403,116 gross were sold for about $174, which defendant says should fix the price for those attached to pencil holders.· Altogether about 9,478 gross of No. 1.403 were sold. and, at the price thus fined, would amount to $14,245.25. De-

922

(, '87:FEDERAL R}j)POR'1'ER.

estimates pet gross. fllhemaster mates their' cost 'at. $1;93. Inasmuch 'as the master:sestimate of cost on the other'otickles exceeds that of defendant, and the defendant has. furnished n'o" definite statement of errors ,on this No. I am able to adopt :01' complainant's counsel admits 1,403 to be correct, I shall; adopt the master's instead of the defendant's estimate of cost, which gives a cost of $9,762.21; and deducting this profit the admitted selling price of $14,245.23 leaves $4,483.02, Which, added to $323.13 profits on the other series, makes $4,806.15. In regard to the selling price adopted by complainant, the actual sell· ing price of the buckles sold separately was 15; per cent. above the cost, as, ad.mitted by eomplainant.1n the case of No. 1,403 the selling price is more tl1an45 per cent. above the cost, which indicates that it is sufficiently high; that is, the complainant is allowed about three times the proportionate profit on No. 1,403 ,that was made on the other numbers in which the actual selling price and cost are admitted by complainant. Furthermore,as the claims allowed do not the. whole buckle, and as defendant improved the buckle for this particular purpose, and added a new:element thereto, the share of profit to be assigned to the buckle must, as the report in other ways makes eVident, be a matter of opinioti,upon which different minds would necessarily differ. I think the above amount is as much as should to the bUckle and recovered by complainant upon all thefacfs before me, and especially in View of hel'delay in enforcing her rightg. Let judgment !Ie entered for complainant for said sum of. $4,806.15. "
PERKINS ELECTRIC SWITCH MD'G. CO. v. GIBBS ELECTRIC MFG. CO_ et al. (Circuit Court; D: Connecticut.
1.

June 20, 1898.)

PATENTS-CONSTRUOTXON'QF CLAIMs-PROCEEDINGS INP....TENT OFFICE.

A patentee should not, necessarily be estopped by statements of his solicitor In explaining the claims; but where he deliberately acquiesces In the rejection of a broad claim, and substitutes therefor a narrower one, as a conditional securing 'thetpateliJ.t,. be cannot th¢reafter Insist on a construction which, will cover what was thus abandoned. The Gibbs patent, No. 517,100, fOf an Improvement In electric switches of the for/D as "snap ,switches," covers a new and useful Improve. ment, but must be limited to the 'precise construction shown. . ,
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2. SA,ME-ELEOTRIC SWITCHE;s, . ' .

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TOWNSENlD,District Judge. Bill in equity on patent No. 517" 100, granted :(\:larch 27, 1894, to complainant, as assignee of one Gibbs. Defendants cla.im that they manufacture under patent No.